OPPOSITION Nо B 2 893 611

 

Víctor Guedes - Indústria e Comércio, S.A., Largo Monterroio Mascarenhas, nº 1, 1070-184 Lisboa, Portugal (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative) 

 

a g a i n s t

 

Olivareros y Almazareros de España, SA, Madre Soledad Torres Acosta, 3a 6º, 23001 Jaén, Spain (applicant), represented by Olten Patentes y Marcas, Rambla De Catalunya, 66, Planta 6ª, GH, 08007 Barcelona, Spain (professional representative).

On 26/01/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 2 893 611 is upheld for all the contested goods.

 

2.	European Union trade mark application No 16 313 009 is rejected in its entirety.

 

3.	The applicant bears the costs, fixed at EUR 620.

 

REASONS

 

The opponent filed an opposition against all the goods of European Union trade mark application No 16 313 009 . The opposition is based on European Union trade mark registration No 10 194 447 and Portuguese trade mark registration No 386 727 ‘GALLO’. The opponent invoked Article 8(1)(b) EUTMR.

On 05/10/2018, the Opposition Division rendered a decision that resulted in the rejection of the opposition on the grounds that there was no likelihood of confusion.

The decision was appealed and the Board of Appeal decided in case R 2388/2018-5 on 24/09/2019 The Board’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered that assessment of the proof of use must be carried out and the marks examined again, since in the Board’s view the dissimilarities of the signs are not enough, in terms of distinctiveness and visibility, to counteract the similarities.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Portuguese trade mark registration No 386 727 ‘GALLO’.

 

PROOF OF USE

 

Portuguese trade mark registration No 386 727 ‘GALLO’.

 In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

 

The same provision states that, in the absence of such proof, the opposition will be rejected.

 

The applicant requested that the opponent submit proof of use of  Portuguese trade mark  No  386 727 ‘GALLO’.

 

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

 

The date of filing of the contested application is 03/02/2017. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Portugal  from 03/02/2012 to 02/02/2017 inclusive.

Furthermore, the evidence must show use of the trade mark  for the goods on which the opposition is based, namely the following:

 

Class 29:   Olive oil, edible oils and fats.

 

With regard to the evidence submitted as proof of use, the following must be noted. On 04/12/2017, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 09/02/2018 to submit evidence of use of the earlier trade mark. On 09/02/2018, within the time limit, the opponent submitted evidence of use.

On 05/06/2018, after expiry of the time limit, the opponent submitted additional evidence.

 

Even though, according to Article 10(2) EUTMDR, the opponent has to submit proof of use within a time limit set by the Office, this cannot be interpreted as automatically preventing additional evidence from being taken into account.

 

According to Article 10(7) EUTMDR, where the opponent submits after the expiry of the time limit set by the Office indications or evidence that supplement prior relevant indications or evidence submitted within the time limit, the Office may take into account the evidence submitted out of time as a result of an objective, reasonable exercise of the discretion conferred on it by Article 95(2) EUTMR. The Office must exercise its discretionary power if the late indications or evidence merely supplements, strengthens and clarifies the prior relevant evidence submitted within the time limit with the purpose of proving the same legal requirement laid down in Article 10(3) EUTMDR, namely, place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which opposition is based.

 

When exercising its discretionary power, the Office must take into account, in particular, the stage of proceedings and whether the facts or evidence are, prima facie, likely to be relevant for the outcome of the case and whether there are valid reasons for the late submission of the facts or evidence. 

The fact that the applicant disputed the initial evidence submitted by the opponent justifies the submission of additional evidence in reply to the objection (29/09/2011, T‑415/09, Fishbone, EU:T:2011:550, § 30, 33; 18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 36).

 

Furthermore, the additional evidence merely strengthens and clarifies the evidence submitted initially, as it does not introduce new elements of evidence but merely enhances the conclusiveness of the evidence submitted within the time limit.

 

For the above reasons, and in the exercise of its discretion pursuant to Article 95(2) EUTMR, the Office therefore decides to take into account the additional evidence submitted on 05/06/2018.

Pursuant to Article 94 EUTMR, decisions of the Office shall be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. The applicant was, therefore, given an opportunity to comment on this additional evidence on 29/05/2020, but in its reply dated 01/07/2020, the applicant did not include comments in this particular regard.

In view of the above, the evidence to be taken into account is  the following:

 

Submissions of 09/02/2018:

 

 Documents 1-8: Eight invoices from 2012-2017, one per year except for 2016 and 2017 for which two invoices were submitted. The invoices show sales of olive oil, some show sales of vinegar or olive paste and chili pepper. The invoices are all issued to the same buyer, Modelo Continente Hipermercados SA of Portugal. The invoices show sale of olive oils with GALLO mark in very large quantities, up to 840 000 units per product and per invoice

 Documents 9-10: Extract from the Portuguese Industrial Property Office publication, of 2004. The article describes the opponent’s company history and mentions that the the opponent’s mark is a trade mark with a reputation for a traditional olive oil product. Also, an extract from a magazine ‘Fortunas & Negocios’, allegedly dated May 2000, featuring an article about historical brands, where the opponent’s mark is mentioned as a strong olive oil brand and a market leader.

 Documents 11-12: Google search print outs for ‘Gallo%Azeite’ returning 357 000 results mostly referring to website www.gallooliveoil.com; and ‘Gallo%Vinagre’ with 8420000 results referring to various websites.

Submissions of 05/06/2018:

 Additional Documents 1-3: Printouts, dated 14/05/2018, from the websites of supermarket Jumbo, of a local store ‘As Marias’ of Mem Martins and supermarkets ‘Froiz’ of Valença. All printouts show images of olive oil products with the Gallo trade mark on the product or in the reference text.

 Additional Documents 5-7: Printout and translation of a news item on the advertisement investment in 2017; press article from 2015 about the participation of an artist J.Vasconcelos in creating olive oil bottle packages; press article of 2017 about Brazilian chef R. Vanzetta using the opponent’s olive oil.

 

 

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

All the documents submitted show that the place of use is Portugal. This can be inferred from the Portuguese language of the documents, and the addresses, origins and references of the said documents. Therefore, the evidence relates to the relevant territory. 

Most of the evidence is dated within the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

 

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

 

The documents filed, namely the invoices together with the supporting press articles, although not being extensive, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. 

The invoices show a steady and a very large scale sales. The distribution of the product via supermarkets shows that the product is on the market and there is a lot of sales and demand for it, considering the invoices showing sales of up to 840 000 units per invoice. The applicant’s arguments about the low price of the product are set aside, since the price of the product is not important, especially considering the very high number of sales in the present case, that is to say the low price is counterbalanced by the high volumes of sales. The articles from the Portuguese IPO show the history of the mark and longstanding use, which is supported by the remaining press articles and extracts, although not numerous. These documents, some of which date back in history do show a steady and continuous usage of the mark, contrary to the applicant’s arguments.

The fact that the sale is directed at a single customer does not mean that these sales should be ignored.

The mark must be used publicly and outwardly in the context of commercial activity with a view to economic advantage for the purpose of ensuring an outlet for the goods and services that it represents (12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68, § 39; 30/04/2008, T-131/06, Sonia Sonia Rykiel, EU:T:2008:135, § 38). In the present case, taking into account that the evidence shows use of the mark in voluminous commercial transactions with a large supermarket chain in Portugal, the Opposition Division considers that the evidence is sufficient to show that the commercial exploitation of the mark was real and warranted in the economic sector concerned to maintain or create a share in the market for the goods in question. It is important to bear in mind that the purpose of Article 47(2) EUTMR is not to review the economic strategy of an undertaking (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 32; 08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 38).

The evidence shows that the mark has been used in accordance with its function and as registered for the goods for which it is registered.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

 
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

 

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

 

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

 

In the present case, the evidence shows genuine use of the trade mark for the following goods:

 

Class 29:   Olive oil.

 

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

 

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

 

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

 

 

a) The goods

 

Following the assessment of proof of use, the goods on which the opposition is based in relation to earlier Portuguese trade mark registration No 386 727 are the following:

 

Class 29:   Olive oil.

 

The contested goods are the following:

 

Class 29: Extra virgin olive oil.

The contested extra virgin olive oil is contained in the broad category of the opponent’s olive oil. The goods are therefore identical.

 

b) Relevant public — degree of attention

 

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

 

The goods at stake are all olive oil, which is a mass consumption product aimed at the public at large whose average consumer will pay a normal level of attention, given that they are rather basic foodstuffs consumed daily and normally of a relatively low price (decision 24/09/2019, R 2388/2018-5, GAULOS Extra Virgin Olive Oil (fig.) / GALLO DESDE 1919 (fig) et al. § 20).

 

c) The signs

 

GALLO
Earlier trade mark	Contested sign

 

The relevant territory is Portugal.

 

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

Conceptually, from the perspective of the Portuguese average consumers both the word elements in the signs under comparison ‘GAULOS’ and ‘GALLO’ will be seen as meaningless (decision 24/09/2019, R 2388/2018-5, GAULOS Extra Virgin Olive Oil (fig.) / GALLO DESDE 1919 (fig) et al. § 42)

 

 Since the earlier word mark GALLO is meaningless for the relevant public it is therefore, distinctive.

The contested sign is a figurative mark containing a word element ‘GAULOS’ written in a highly stylised typeface. As it is meaningless, it is considered distinctive.

The Boards of Appeal has established that in the word ‘GAULOS’ the second letter ‘A’ is depicted in the triangular form and one if its sides takes the shape of an oar. The letter ‘O’ also contains the same black dot in the centre of the letter. The letters themselves form an outline image of a boat. Underneath it are several zig-zag lines in the form of a stylised sea. These elements have no descriptive or allusive content in connection with the relevant goods, and are therefore, distinctive.

On the topmost right hand corner is a circular sun-like image containing the words ‘EXTRA VIRGIN OLIVE OIL’ in a small typeface. They will be perceived by part of the public understanding these English words. These terms moreover form an expression which - as a whole - can be considered to have become customary to describe a certain type of olive oil. As the contested goods are extra virgin olive oil, this expression is clearly descriptive and hence non-distinctive for the public perceiving these terms as meaningful and/or for the part of the public that has been extensively confronted with this expression without perceiving it as a badge of origin. It is however distinctive for the public that does not grasp its meaning. In any event, irrespective of the distinctive character, due to their very small size, these elements are hardly perceptible. As these are likely to be disregarded by the relevant public, they will not be taken into consideration in the comparison of the signs.

The word element GAULOS in the contested sign is more outstanding than other elements.

Visually, the signs coincide in the letters ‘GA-LO-’. However, they differ in their remaining letters ‘U’, ‘S’, the fact that the earlier mark contains two letters ‘L’, and the overall layout of the signs. In particular, the marks differ in the figurative aspects and elements of the contested sign, such as words ‘EXTRA VIRGIN OLIVE OIL’, none of which has any counterpart in the other sign.

Therefore, the signs are visually similar to a low degree.

 

Aurally, while, the first elements of the signs ‘GAULOS’ and ‘GALLO’ will convey very similar sounds, the additional expression ‘EXTRA VIRGIN OLIVE OIL’ in the contested mark is absent in the earlier one. Nonetheless, given that the above mentioned additional expression is weak and not particularly visible when perceiving the applicant’s sign, it does not constitute a relevant element of differentiation able to offset the similarity in the initial parts of the signs. Furthermore, since the consumer generally pays greater attention to the initial part of a mark than to the final part, the first word plays a decisive part in the phonetic comparison of the signs (07/09/2006, T-133/05, Pam-Pim’s Baby-Prop, EU:T:2006:247, § 51; 12/12/2017, T–815/16, opus AETERNATUM / OPUS, EU:T:2017:888, § 60). (decision 24/09/2019, R 2388/2018-5, GAULOS Extra Virgin Olive Oil (fig.) / GALLO DESDE 1919 (fig) et al. § 39-40). 

Therefore, the signs are aurally similar to at least a low degree.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

As established by the Boards of Appeal, from the perspective of the Portuguese average consumers both the word elements in the signs under comparison ‘GAULOS’ and ‘GALLO’ will be seen as meaningless. On the other hand, the contested sign contains the expression ‘Extra Virgin Olive Oil’ and also the graphic representation which recalls the shape of a ship in the sea under the sun, both absent in the earlier mark taken into consideration. This leads to the finding that the signs are not conceptually similar. The presence of those elements, however, is of much reduced relevance and is not enough to create an overall impression of conceptual dissimilarity between the signs (Decision 24/09/2019, R 2388/2018-5, GAULOS Extra Virgin Olive Oil (fig.) / GALLO DESDE 1919 (fig), p. 42-44).

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

 

d) Distinctiveness of the earlier mark

 

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

 

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

 

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark has no meaning for the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.  

 

e) Global assessment, other arguments and conclusion

 

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The earlier mark and the contested sign have been found to be visually similar to a low degree and aurally similar to at least a low degree due to the coincidence in the letters ‘GA-LO-’ in both marks. According to the Boards of Appeal decision referenced, the marks cannot be considered conceptually dissimilar. The differences between the marks can be easily overlooked, and, in any event cannot outweigh the prevailing coinciding letters perceived by the public. The similarities between the signs are thus sufficient to cause at least part of the public to believe that the conflicting goods which are identical come from the same or economically linked undertakings.

Furthermore, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

 

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Portuguese trade mark registration No 386 727. It follows that the contested European Union trade mark application must be refused for all the contested goods.

  

As earlier Portuguese trade mark registration No 386 727 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

 

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

 

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

 

The Opposition Division

 

 

Solveiga BIEZA

Erkki MÜNTER

Ferenc GAZDA

 

 

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.